Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 recites “a central axis” twice. Change the second instance to “[[a]] the central axis” to fix the antecedent basis issue. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: change “and the wherein mounting flange extends” to “and wherein mounting flange extends”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 7, and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Carter (US 2020/0324869) in view of Orvieto et al. (US 2023/0278690), referred to hereafter as Orvieto.
With regard to claim 1:
Carter discloses a marine drive assembly, comprising: a housing (23) extending along a central axis (54) and defining a gearbox section and a driveshaft section (Fig. 1-7); a bevel gear assembly (se 40 comprising 48, 49, and 52. Regarding the gears being bevel gears, see [0019], [0070]) housed in the gearbox section and having a first bevel gear (48) rotatable about a central axis, a second bevel gear (49) rotatable about the central axis, and a third bevel gear (52) rotatable about a radial axis and operatively engaging the first bevel gear and the second bevel gear (Fig. 6); an inner shaft (36) extending along the central axis and operably connected to the first bevel gear (48) for rotation in a first rotational direction about the central axis ([0067]); and an outer shaft (37) coaxially arranged with the inner shaft (Fig. 6) and operably connected to the second bevel gear (49, [0068]) for rotation in an opposite second rotational direction about the central axis ([0071], [0074]).
Carter does not appear to explicitly disclose a mounting flange connected to and extending around at least part of the gearbox section.
However, Orvieto teaches a marine drive assembly, comprising: a housing extending along a central axis and defining a gearbox section and a driveshaft section (Fig. 1, 2); a gear assembly (71) housed in the gearbox section; a mounting flange (18) connected to and extending around at least part of the gearbox section (Fig. 1, 2); an inner shaft extending along the central axis for rotation in a first rotational direction about the central axis; and an outer shaft coaxially arranged with the inner shaft for rotation in an opposite second rotational direction about the central axis ([0028]). Orvieto teaches that the mounting flange abuts against an inwardly facing bottom surface of the hull and is used to mount the gear assembly to the hull ([0030], Fig. 1, 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine prior art elements according to known methods, and add the mounting flange of Orvieto to the marine drive assembly of Carter, to yield predictable results of mounting the gear assembly to the hull.
With regard to claim 2, the combination of Carter and Orvieto further discloses that a majority portion of the bevel gear assembly is above the mounting flange (see [0038] of Orvieto teaching that approximately ½ of the gear assembly is above the mounting flange, and note that “approximately ½” includes values more than ½, hence includes a majority portion. Furthermore, applying the mounting flange of Orvieto to the marine drive assembly of Carter would naturally result in a majority portion of the bevel gear assembly being above the mounting flange. See annotated Fig. 4 of Carter below with the mounting flange of Orvieto added).
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Annotated Fig. 4 of Carter
With regard to claim 3, the combination of Carter and Orvieto further discloses a first propeller attached to the inner shaft and a second propeller attached to the outer shaft (see 41 and 42 in Fig. 4 and [0071]), wherein during use the first propeller rotates in a first rotational direction and the second propeller rotates in an opposite second rotational direction about the central axis (Carter, Fig. 4-6, [0071]).
With regard to claim 4:
The combination of Carter and Orvieto discloses the marine drive assembly of claim 1, as set forth above, and further discloses that the central axis defines an angle approximately 15-25° with a top surface of the flange (see the rejection of claim 1. Also see Fig. 1-5 of Carter and Fig. 1-2 of Orvieto, and the annotated Fig. 4 of Carter. The angle is visually approximately 15-25°).
The combination of Carter and Orvieto does not appear to explicitly disclose that the angle is exactly between 15-25°.
However, a careful examination of the specification reveals no criticality for the value of the angle being exactly between 15-25°, nor any reason as to why the marine drive assembly of applicant with the value of the angle being exactly between 15-25° would operate any different than the marine drive assembly of the combination of Carter and Orvieto, and Applicant has not disclosed that this exact range of angle provides an advantage, is used for a particular purpose, or solves a stated problem. On the contrary, the specification discloses that this range is merely an example (see [0035], [0049]). Hence, the value of the angle being exactly between 15-25° is considered to be a design choice by the applicant. One of ordinary skill in the art, furthermore, would have expected the combination of Carter and Orvieto, and Applicant’s invention, to perform equally well, because both would perform the same function.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine the value of the angle being between 15-25° as claimed with the marine drive assembly of the combination of Carter and Orvieto in order to achieve a desired dimension or configuration, as they are a matter of design choice. Such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art.
With regard to claim 7, the combination of Carter and Orvieto further discloses that the housing lacks a strut (Carter, Fig. 1-7).
With regard to claim 9, the combination of Carter and Orvieto further discloses that the first bevel gear is a drive gear (Fig. 6).
With regard to claim 10, the combination of Carter and Orvieto further discloses that the mounting flange extends around a lower and aft portion of the gearbox section (see the rejection of claim 1. Also see Fig. 1-5 of Carter and Fig. 1-2 of Orvieto. Note that claim 10 doesn’t define a plane of reference for “lower” and “aft”).
With regard to claim 11:
The combination of Carter and Orvieto discloses the marine drive assembly of claim 10, as set forth above, and further discloses that the mounting flange has a width and a length.
The combination of Carter and Orvieto is silent about the size of the mounting flange, hence it does not appear to explicitly disclose that the width is less than 300 mm and the length is less than 500 mm.
However, a careful examination of the specification reveals no criticality for the values of the width being less than 300 mm and the length being less than 500 mm, nor any reason as to why the marine drive assembly of applicant with these values of the width and length would operate any different than the marine drive assembly of the combination of Carter and Orvieto, and Applicant has not disclosed that this exact values provide an advantage, are used for a particular purpose, or solve a stated problem. On the contrary, the specification discloses that these values are merely examples (see [0041], [0056]). Hence, the values of the width being less than 300 mm and the length being less than 500 mm are considered to be a design choice by the applicant. One of ordinary skill in the art, furthermore, would have expected the combination of Carter and Orvieto, and Applicant’s invention, to perform equally well, because both would perform the same function.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine the values of the width being less than 300 mm and the length being less than 500 mm as claimed with the marine drive assembly of the combination of Carter and Orvieto in order to achieve a desired dimension or configuration, as they are a matter of design choice. Such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art.
With regard to claim 12:
The combination of Carter and Orvieto discloses the marine drive assembly of claim 1, as set forth above, and further discloses that the driveshaft section has an outer diameter.
The combination of Carter and Orvieto is silent about the diameter of the driveshaft section, hence it does not appear to explicitly disclose that the outer diameter is less than 100 mm.
However, a careful examination of the specification reveals no criticality for the value of the diameter of the driveshaft section being less than 100 mm, nor any reason as to why the marine drive assembly of applicant with this value of the driveshaft section diameter would operate any different than the marine drive assembly of the combination of Carter and Orvieto, and Applicant has not disclosed that this exact value provides an advantage, is used for a particular purpose, or solves a stated problem. On the contrary, the specification discloses that this value is merely an example (see [0041], [0057]). Hence, the value of the diameter of the driveshaft section being less than 100 mm is considered to be a design choice by the applicant. One of ordinary skill in the art, furthermore, would have expected the combination of Carter and Orvieto, and Applicant’s invention, to perform equally well, because both would perform the same function.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine the value of the diameter of the driveshaft section being less than 100 mm as claimed with the marine drive assembly of the combination of Carter and Orvieto in order to achieve a desired dimension or configuration, as they are a matter of design choice. Such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art.
With regard to claim 13:
The combination of Carter and Orvieto discloses the marine drive assembly of claim 12, as set forth above, and further discloses that the gearbox section has an outer diameter.
The combination of Carter and Orvieto is silent about the diameter of the gearbox section, hence it does not appear to explicitly disclose that the outer diameter is less than 150 mm.
However, a careful examination of the specification reveals no criticality for the value of the diameter of the gearbox section being less than 150 mm, nor any reason as to why the marine drive assembly of applicant with this value of the gearbox section diameter would operate any different than the marine drive assembly of the combination of Carter and Orvieto, and Applicant has not disclosed that this exact value provides an advantage, is used for a particular purpose, or solves a stated problem. On the contrary, the specification discloses that this value is merely an example (see [0041], [0058]). Hence, the value of the diameter of the driveshaft section being less than 100 mm is considered to be a design choice by the applicant. One of ordinary skill in the art, furthermore, would have expected the combination of Carter and Orvieto, and Applicant’s invention, to perform equally well, because both would perform the same function.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine the value of the diameter of the gearbox section being less than 150 mm as claimed with the marine drive assembly of the combination of Carter and Orvieto in order to achieve a desired dimension or configuration, as they are a matter of design choice. Such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art.
With regard to claim 14, the combination of Carter and Orvieto further discloses a boat having a hull and comprising: the marine drive assembly of claim 1 (Carter, Fig. 1-7); an inboard motor in the hull (Carter, Fig. 1, 5); a drive shaft operably coupled to the inboard motor extending rearward from the inboard motor to the marine drive assembly (Carter, Fig. 1, 5).
With regard to claim 15, the combination of Carter and Orvieto further discloses that the hull defines a bottom recess and the wherein mounting flange extends around an outside of the bottom recess (see the rejection of claim 1. Also see Fig. 1-5 of Carter and Fig. 1-2 of Orvieto).
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Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Carter (US 2020/0324869) in view of Orvieto et al. (US 2023/0278690), referred to hereafter as Orvieto, as applied to claim 1 above, and further in view of Templeman (US 2013/0084762).
With regard to claims 5-6:
The combination of Carter and Orvieto discloses the marine drive assembly of claim 1, as set forth above.
The combination of Carter and Orvieto does not appear to explicitly disclose a skeg removably attached to the driveshaft section of the housing.
However, Templeman teaches a marine drive assembly and further teaches a skeg (10) removably attached to the driveshaft section (Fig. 1, 2) to counteract steering torque ([0001]), protect the propeller from striking submerged objects or the bottom surface, and as a fixed rudder to assist in steering ([0005]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine prior art elements according to known methods, and have a skeg removably attached to the driveshaft section of the housing, to yield predictable results of counteracting steering torque, protecting the propeller from striking submerged objects or the bottom surface, and as a fixed rudder to assist in steering.
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Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Carter (US 2020/0324869) in view of Orvieto et al. (US 2023/0278690), referred to hereafter as Orvieto, as applied to claim 1 above, and further in view of Achiwa et al. (US 2016/0185432), referred to hereafter as Achiwa.
With regard to claim 8:
The combination of Carter and Orvieto discloses the marine drive assembly of claim 1, as set forth above.
The combination of Carter and Orvieto does not appear to explicitly disclose that the inner shaft defines a helical groove.
However, Achiwa teaches a marine drive assembly with inner and outer shafts and further teaches that the inner shaft defines a helical groove (235) for sending oil along the shaft ([0046], Fig. 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine prior art elements according to known methods, and define a helical groove on the inner shaft, to yield predictable results of lubricating.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to the attached form PTO-892 for pertinent prior art disclosing similar marine drive assemblies such as US 4642059.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BEHNOUSH HAGHIGHIAN whose telephone number is (571)270-7558. The examiner can normally be reached Mon-Fri, 7:00am-15:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Courtney D Heinle can be reached at (571) 270-3508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BEHNOUSH HAGHIGHIAN/
Examiner
Art Unit 3745
/COURTNEY D HEINLE/Supervisory Patent Examiner, Art Unit 3745
Prosecution Insights